Mark T. Banner
Section Chair 2002-03

My last Chair's Bulletin highlighted how our Section members, working through the various committees, help shape the law. We do this through studies and reports that provide guidance on all aspects of intellectual property law and policy, from the very esoteric to basic, fundamental changes in our systems. Many of the debates we have and the reports we write detail why (or why not) a particular proposal for change should (or should not) be adopted, with many of those discussions based on the experiences of our practices, our clients, and our colleagues.

In this endeavor I suggest we explicitly ask what too often we consider implicitly if at all. I suggest each of our committee’s and all of their members ask themselves: Will this proposal make us stronger? Is it likely to make the nation as a whole, its economy, its workforce, and industrial might, stronger? What economic, industrial, or national policy will be enhanced? To this end we should bear in mind that intellectual property policy and national industrial policy are inexplicably intertwined, as was illustrated by Judge Newman in her remarks last February 6 at the opening of the FTC/DOJ hearings on "Competition and Intellectual Property Law and Policy in the Knowledge-Based Economy."¹ Judge Newman contrasted the situation that existed in the late 1970's, when "the economy of the nation was at a low point", and investment in basic science and applied research "had disappeared."

She said our production in the United States was no longer competitive. Old technologies were stagnant. New ones were dormant, and the balance of trade had turned negative for the first time perhaps in our national history. Only technology-based industry made a positive contribution, and there was concern, real concern, that national policies were not attuned to the needs of this industry, that we had created disincentives to industrial innovation.

Since then there has been more focus on the importance of intellectual property, she said, citing creation of the Federal Circuit as one example. She added, "Also during that period we’ve experienced the most creative, energetic, entrepreneurial surge since the Industrial Revolution because manufacturers are involved." Borrowing from her observations, we should examine every proposal to see if they are "attuned to the needs" of industry, and if they create incentives or disincentives to industrial innovation in this country.

To this end it is interesting to see what the Government of Japan is saying about its own view of intellectual property. In a report issued last July, and to be more fully described by Section member Sam Helfgott in a forthcoming issue of our IPL Newsletter, the Strategic Council on Intellectual Property sponsored by the Prime Minister of Japan observed, "In the 21st century, Japan needs to discover new economic opportunity by attaching further importance to intellectual property." The report continued: "With the national goal of becoming a nation built on intellectual property, Japan will be able to maintain its position as a world leader in many fields of industry and culture if comprehensive policies are carried out without delay." The report concluded that Japan should pursue four strategic initiatives: intellectual property creation, protection, and exploitation, and "enhancement of the human foundation" that supports the first three initiatives. In discussing the protection of intellectual property the report restated what many of us take as a given: "In order to secure incentives for the creation of intellectual property, its careful protection is indispensable."²

Far ranging changes are being proposed to our patent system.

The PTO has proposed a wholesale revision of patent and trademark user fees, as well as numerous operational changes, including shifting the burden of searching from PTO Examiners to outside search firms. Many IP organizations, including this Section, testified against some of the proposed changes. (Our testimony is available on the Section website.) On August 22 Congressman Howard Coble, the influential Chair of the Subcommittee on Courts, the Internet, and Intellectual Property, wrote to Director of the PTO James Rogan recognizing that some of the PTO’s proposals were criticized in Congressional testimony. Coble observed that "we should not and cannot sacrifice quality consensus reform on the altar of speed." He urged the PTO to identify those proposals that enjoy broad support and can be implemented quickly, leaving the more controversial ones for further study. As a consequence, the draft bill that the PTO sent to Congress in July has not yet, even now, been formally introduced, and the PTO is now revising its proposal to address some of the concerns expressed at the hearing.

Various committees of this Section will be studying these and other changes to the patent system. At least Committees 101 (Patent Legislation), 103 (Patent And Trademark Office Affairs - Patents) and 108 (Patent System Policy Planning) will be involved in reviewing the PTO proposals. Other committees may become involved as needed. I urge you to become involved in one or more of those committees, and to have a voice in how we shape our patent system of the 21st Century. And when you do, I suggest you consider, as one of the first questions: Will this make us stronger?

ABA Amicus Procedures and Victoria's Secret

By Robert W. Sacoff,
Chair-Elect

Our Section has successfully petitioned the ABA to file four amicus curiae briefs with the U.S. Supreme Court within the 2001-02 time frame. Our latest brief, filed August 16, 2002, in the Victoria's Secret trademark dilution case,³ illustrates the process.

ABA amicus brief standards are deliberately restrictive, as a quality control measure and also to prevent overexposure and dilution of effectiveness. Amicus curiae briefs are filed only in the name of the ABA itself, not by individual Sections. Briefs are authorized by the Board of Governors ("Board") or its Executive Committee, "¼ sparingly and only when the brief would constitute a significant contribution to the consideration of the issue or issues involved¼ " The brief must either advance (a) previously adopted ABA policy, or (b) a matter of compelling public interest which the Board then adopts as ABA policy, or (c) a matter of special significance to lawyers or the legal profession. In the Victoria's Secret case, we relied on Section policy and sought to make it ABA policy under a tight time-line.

Prompted by a Congressional hearing in February, 2002, Committee 201 proposed the following resolution:

That the Section supports interpretation and amendment of the federal Lanham Act to insure that questions of trademark dilution under that Act are uniformly resolved under the standard of whether the junior user’s mark is likely to cause dilution of the senior user’s mark, rather than under a standard of actual dilution.

Council adopted that resolution on April 16, 2002, a day after the Supreme Court granted certiorari, quite coincidentally, in the Victoria's Secret case. Thus, a legislative matter evolved into an amicus curiae issue. Section Chair Charles Baker decided to request amicus curiae brief authorization, even though the ABA had recently turned us down in the Eldred v. Ashcroft Copyright Term Extension Act case.

On May 14, 2002, we asked the House of Delegates ("House") to adopt our Section's resolution as ABA policy. But as the House would not meet until after the Court deadline, we simultaneously asked the Board’s Executive Committee to consider our request on an expedited basis and authorize the brief. We cited the lack of opposition by other ABA Sections, but the Executive Committee still declined. They deferred our request to the June 22 meeting of the full Board, where they then granted our request for policy. That implied we could draft the brief, subject to the approval of the ABA Standing Committee on Amicus Curiae Briefs, and final Board approval of the brief. The Standing Committee is a small but high-powered group including a former Solicitor General and several former Supreme Court clerks. Their collective experience and suggestions on judgment calls were invaluable.

The Standing Committee required the draft brief by June 1, 30 days before its July 1 due date, even though the Board would not decide whether we could file it until June 22. That time pressure was relieved when the Court extended the filing deadlines on motion of the parties. The brief was drafted by myself and Section Amicus Curiae Brief Committee members Uli Widmaier and Chad Doellinger, and was circulated to the Standing Committee on June 13. On June 26, the Standing Committee approved it, subject to a list of questions and suggested revisions. We submitted a revised draft on July 5. They gave us a second set of comments, and we submitted another draft on August 5. Meanwhile, we also obtained the requisite consent of the parties to filing the amicus brief, which was finally approved by the Standing Committee.

Our brief came before the Board on August 9 at the ABA Annual Meeting in Washington, DC. Les Jacobs, our Section's Board liaison, presented the brief with the enthusiastic support of ABA President Bob Hirshon, and the Board unanimously approved. We filed on August 16, a week before the deadline, and Respondent cited our argument in its own brief. Since the Board had mooted the policy request still pending before the House, we withdrew it from House consideration at the Annual Meeting.

The case has generated a lot of interest in the IP community, and has attracted ten different amicus curiae briefs. Quite apart from the merits, and seeing if the Court finds our arguments persuasive, the policy and approval process shows that filing an amicus curiae brief for the ABA is about a lot more than writing the brief.

Specialization (Committee 507)

John T. Kirk,
Committee Chair

John T. Kirk, Houston, Chair of the Specialization Committee, reminds Section members that the Committee is still active and is posing these questions to the Section: "How should the specialty of Intellectual Property Law be certified? Should this be in the form of one specialization certification or several? How would the qualifications be defined?" Kirk reports that one state bar has already proposed IP specialization "with definitions that few would like."

Send suggestions to John Kirk directly at jkirk@jenkens.com. New committee members are always welcome. Joining the committee provides an opportunity to contribute substantively to the discussion of specialization. Interested members are invited to join by contacting intelprop@abanet.org. Provide your ABA member ID number, full name, address, phone, fax and e-mail, along with a request to be added to the Specialization Committee (Committee 507).

Special Committee On Diversion Of PTO Funds (Committee 155)

William C. Rowland
Committee Chair

Over one year ago, Plaintiff Miguel Figueroa of San Juan, Puerto Rico, filed a class action complaint with the Court of Federal Claims in Washington, DC.  The complaint alleged, inter alia, that the past increases, diversions and rescissions of patent fees exceeded Congress’ constitutional power under the Patent Clause "to promote the progress of science and the useful arts." (Article I, Sec. 8, cl. 8.) In effect, the increases, diversions and rescissions of patent fees act as a tax against inventors and innovative companies. Like any tax, these practices do not promote, but rather discourage participation in the patent system.

After considering extensive pleadings, the Court’s Judge Bohdan Futey ordered that oral arguments would be heard on Thursday, November 14, 2002 in Washington, DC. Judge Futey has scheduled nearly four hours for the oral arguments.

The Plaintiff’s attorney, Heath W. Hoglund, would like to meet with interested individuals on Friday, November 15, 2002, also in Washington, DC. The purpose of the meeting will be to discuss various strategies and actions that can be taken concerning the diversion of PTO fees. Additional information regarding the case and the meeting will be posted on the website of Plaintiff's attorney, Heath W. Hoglund, at: www.hhoglund.com.

Section Maintains International IP List

Last year the Section established an e-mail discussion group on international intellectual property law matters to which all members are welcome to subscribe.

Moderator of the list is Samson Helfgott of New York, NY, the Section’s International Activities Coordinator.

Section members can subscribe themselves to the list using the online form at www.abanet.org/ discussions/i-llists.html. Scroll to the list called "IPL-International" and click on "Subscribe".

If you encounter any problems in the subscription process, contact intelprop@abanet.org.

Chair Appoints Section Nominating Committee

The following Nominating Committee has been appointed by Section Chair, Mark T. Banner.

Gregory J. Maier, Chair, Oblon, Spivak, McClelland, Maier & Neustadt, PC, 1755 Jefferson Davis Highway, Crystal Square 5, Arlington, VA 22202
703/413-3000. FAX: 703/413-2220.
gmaier@oblon.com

Edward G. Fiorito, IP Consulting Attorney, 6925 Spanky Branch Road, Dallas, TX 75248
972/380-1070. FAX: 972/380-9154.
ipconsulting@msn.com

Barbara J. Grahn, Oppenheimer Wolff & Donnelly, LLP, 45 South 7th St., Suite 3300, Plaza VII, Minneapolis, MN 55402-1609
612/607-7325. FAX: 612/607-7100.
bgrahn@oppenheimer.com

The Nominating Committee welcomes members’ suggestions for nominees for the offices of Chair-Elect, Vice Chair, Secretary, Financial Officer, Section Delegate to the ABA House of Delegates, and four new members of Council for four year terms expiring in 2007.
Contact Nominating Committee Chair Gregory J. Maier with suggestions.

Under the Section Bylaws, Robert W. Sacoff, current Chair-Elect, will automatically assume the office of Section Chair on September 1, 2003.

The Section’s Business Session with Election will be held Saturday, August 9, 2003 at the Aba Annual Meetingits careful protection is indispensablein San Francisco. All members are invited to attend and vote.